August 15, 2011

Judge Quashes Subpoena against Apple Attorneys in Patent Dispute

Washington's Sterne, Kessler, Goldstein & Fox scored a victory late last week in its bid to stay out of a deposition chair over its representation of Apple Inc. in patent matters.

On Friday, U.S. District Judge Beryl Howell
granted (PDF) the firm's motion in Washington federal court to quash a subpoena filed by Eastman Kodak Co., which is suing Apple over alleged patent infringement relating to camera and other computer-related technology.

Kodak wanted Sterne Kessler attorneys to give deposition testimony and turn over documents about their work for Apple in a patent re-examination with the U.S. Patent and Trademark Office. The firm is not representing Apple in the underlying dispute in U.S. District Court for the Western District of New York.

Sterne Kessler argued that a deposition would force attorneys to breach attorney-client privilege.

Howell wrote that Sterne Kessler is in no-man’s land when it comes to case law governing attorney depositions. The attorneys in question aren’t opposition counsel — who would be protected by a strict test limiting such depositions — but they also aren’t former counsel on a completely unrelated matter.

Still, Howell wrote that the same concerns about violations of attorney-client privilege that come up in subpoenas for opposition counsel testimony applied to this case, since Sterne Kessler attorneys were privy to some of the same information as Apple’s litigation counsel on the re-examined patents.

The judge found that a deposition was inappropriate because Kodak had failed to specify what nonprivileged, factual information it wanted. Instead, Howell wrote that Kodak was seeking “the type of fishing expedition that courts have attempted to prevent when seeking to deter deposition of counsel.”

Howell also found that the subpoena was inappropriate because Kodak could get much of the information it wanted in the patent office’s written record or by deposing patent office staff.

A representative for Kodak could not immediately be reached. The company was represented by Eric Rusnak and John Longstreth of K&L Gates, who also could not immediately be reached for comment.

Sterne Kessler director David Cornwell, who represented the firm, said Monday that Howell’s ruling represents an important clarification for firms in a similar position.

“It’s clear that someone acting as re-examination counsel is more like litigation counsel than former counsel or a disinterested third party,” Cornwell said.

Sterne Kessler was fighting a similar subpoena from Nokia Corp., which was suing Apple over other patents. Nokia withdrew the subpoena after the company settled with Apple in June.